2005Hu3017 Invalidation of Registration

by the Supreme Court of Korea

Justices Kim Yong-dam (Presiding Justice), Park Si-hwan, Park Il-hwan (Justice in charge), Kim Neung-hwan

Main Issues

1. Where the two inventions are under different categories of the invention of an object and the invention of a method respectively, whether it can be determined right away that they are not identical inventions (negative)
2. Where a right holder surrenders the right on either one of the patent right or the right to a new design for practical use while they constitute competing applications, whether it can be deemed that defect arising from competing application is resolved (negative)

Summary of Decision

1. In judging if two inventions are identical to each other, as the premise to apply Article 36 of the former Patent Act (amended by Law No.6411 of February 3, 2001), the actual substance of the two inventions shall be checked, not if there is a difference in how they are expressed, so even though the two inventions are under different categories of the invention of an object and the invention of a method respectively, they shall not be confirmed right away that they are not identical inventions.
2. Renunciation of a patent or a right to a new design for practical use does not solve the problems of a competing application and not have influence as a patent right on a third party, and as the right holder can arbitrarily choose the object and the time for the renunciation, the right relation can be put in an uncertain state, thereby disrupting the legal stability, and unlike the renunciation of the application, the renunciation of a patent right or the right to a new design for practical use does not go back to the past (refer to Article 120 of the former Patent Act) resulting in the recognition of such effect for the renunciation, and furthermore, the renunciation of the patent right et al. can be made only through registration, which is not a sufficient method of external disclosure, so even if a right holder surrenders the right on either one of the patent right or the right to a new design for practical use while there are competing applications, it shall be deemed to be difficult to view that it solves the problem due to a competing application.

Reference Provisions

1. Article 36 of the former Patent Act(amended by Law No. 6411 of Feb.3, 2001)
2. Articles 36, 120 and 133 (1) 1 of the former Patent Act(amended by Law No. 6411 of Feb.3, 2001)

Article 36 of the Patent Act(First-to-File Rule)

(1) Where two or more applications relating to the same invention are filed on different dates, only the applicant of the application having the earlier filing date may obtain a patent for the invention.

(2) Where two or more applications relating to the same invention are filed on the same date, only the person agreed upon by all the applicants after consultation may obtain a patent for the invention. If no agreement is reached or no consultation is possible, none of the applicants shall obtain a patent for the invention.

(3) Where a patent application has the same subject matter as a utility model application and the applications are filed on different dates, paragraph (1) shall apply mutatis mutandis; whereas if they are filed on the same date, paragraph (2) shall apply mutatis mutandis: Provided, That the provision of paragraph (2) shall not apply in any cases where a patent application is made on the same date as a utility model registration application (including a patent application which is deemed to be made on the same date as a utility model registration application under Article 53 (3)), as prescribed in Article 53 as a dual application. <Amended by Act No. 5576, Sep. 23, 1998; Act No. 6411, Feb. 3, 2001>

(4) Where a patent application or utility model registration application is invalidated or withdrawn, or a utility model registration application is rejected, such application shall, for the purposes of paragraphs (1) through (3), be deemed never to have been filed. <Amended by Act No. 6411, Feb. 3, 2001>

(5) A patent application or utility model registration application filed by a person who is not the inventor, creator, or successor in title to the right to obtain a patent or utility model registration shall, for the purposes of paragraphs (1) through (3), be deemed never to have been filed.

(6) The Commissioner of the Korean Intellectual Property Office shall, in the case of paragraph (2), order the applicants to report to him the results of the consultation within a designated period of time. If such report is not submitted within the designated period, the applicants shall be deemed not to have reached an agreement within the meaning of paragraph (2).

Article 120 of the Patent Act (Effects of Abandonment)

A patent right, or an exclusive or non-exclusive license thereon, shall be extinguished as of the time of abandonment of the patent right or of the exclusive or non-exclusive license thereon.

Article 133 of the Patent Act (Invalidation Trial of Patent)

(1) In the following cases, an interested party or an examiner may request a trial to invalidate a patent. In the case that patent contains two or more claims, a request for an invalidation trial may be made for each claim: <Amended by Act No. 5576, Sep. 23, 1998; Act No. 6411, Feb. 3, 2001>

1. Where a patent has been granted contrary to Article 25, 29, 31, 32, 36 (1) through (3), 42 (3), (4), or 44;

2. Where a patent has been granted to a person who is not entitled to obtain the patent under Article 33 (1) or a person who is unable to obtain the patent under the proviso of Article 33 (1);

3. Where a patent has been granted in violation of a treaty;

4. Where, after the grant of a patent, the patentee is no longer capable of enjoying the patent right under Article 25, or the patent no longer complies with a treaty;

4-2. Where an application has been amended in violation of Article 47 (2); or

5. Where a patent violates the provisions of the proviso of Article 87 (2).

Reference Case

1. Supreme Court Decision 89Hu148 delivered on Feb. 27, 1990(Gong1990, 776)

• Plaintiff, Appellee: Kim Ki-bin and 1 other (Attorneys Song Man-ho and 3 others, Counsel for plaintiff-appellee)

• Defendant, Appellant: IK Hwasung, Inc. (Attorney Cho Kwang-hyung, Counsel for defendant-appellant)

• Judgment of the court below: Patent Court Decision 2004Huh7005 delivered on Sep. 30 of 2005

Disposition

The appeal shall be dismissed. All costs of appeal shall be assessed against the defendant.

Reasoning

This is to judge the Reasons for Appeal.

1. On Article 1 of the Reasons for Appeal.

In judging if two inventions are identical to each other, as the premise to apply Article 36 of the former Patent Act (before it was amended to Law Number 6411 on February 3, 2001, hereinafter refers to the same), the actual substance of the two inventions shall be checked, not if there is a difference in how they are expressed, so even though the two inventions are under different categories of the invention of an object and the invention of a method respectively, they shall not be confirmed right away that they are not identical inventions (refer to Supreme Court Decision 89Hu148 delivered on February 27, 1990).

According to the record, patent invention 1 and 2 in this case are the inventions of methods, and comparison invention 1 and 2 in this case are the inventions of objects (ideas), but if they are compared on the basis of their actual substance, each of the above inventions are deemed to be about the same technology that is expressed differently, and therefore the two inventions shall be deemed to be identical.

The judgment by the court below with the same purport is fair and understandable, and is not in violations of the law such as the misunderstanding of legal reasoning about the identity of inventions, as argued in the Reasons for Appeal.

2. On Article 2 of the Reasons for Appeal

The court below, after recognizing the fact, through the selected evidence, that the patent invention and the comparison invention in this case that are identical were applied on the same day by the defendant and registered as a patent and a new design for practical use, and judged that the patent registration was null and void even though the defendant gave up the right to a new design for practical use on the comparison invention before the annulment trial in this case, because the patent invention in this case was registered in violation of Article 36 Section 3 and Section 2 of the former Patent Act.

Article 36 Section 2 of the former Patent Act stipulates, "If two (2) or more patent applications are submitted on the same day for the same inventions, only one applicant shall be granted the patent for the invention, through the agreement by the applicants. If no agreement is reached or if a discussion cannot be conducted, no applicant shall be granted with a patent for the invention." Section 3 of the same Article stipulates, "If the idea for an invention applied for a patent and the idea for a new design application are identical and such patent application and the new design application are submitted on the same day, the provision of Section 2 shall be applied." Section 4 of the same Article stipulates, "If a patent application or a new design application is nullified or dropped, of a new design application is declined, such patent application or new design application, in applying Section 1 through Section 3, shall be deemed to not have existed." Meanwhile, Article 133 Section 1-1 stipulates that if Section 1 through Section 3 of Article 36 is violated, an interested party shall request a trial to annul the patent.

As above, the former Patent Act provides that if two (2) or more patent applications are submitted on the same day for the same inventions, (hereinafter referred to as the "competing applications"), it shall be a reason to nullify a registration, and an exceptional patent shall be granted only if an agreement is reached by the patent applicants or if a patent application is nullified or dropped, and the renunciation of a patent or a right to a new design for practical use are not stipulated as a reason for an exception, so such renunciation does not solve the problems of a competing application and not have influence as a patent right on a third party, and as the right holder can arbitrarily choose the object and the time for the renunciation, the right relation can be put in an uncertain state, thereby disrupting the legal stability, and unlike the renunciation of the application, the renunciation of a patent right or the right to a new design for practical use does not go back to the past (refer to Article 120 of the former Patent Act) resulting in the recognition of such effect for the renunciation, and furthermore, the renunciation of the patent right et al. can be made only through registration, which is not a sufficient method of external disclosure, so even if a right holder surrenders the right on either one of the patent right or the right to a new design for practical use while there are competing applications, it shall be deemed to be difficult to view that it solves the problem due to a competing application.

The decision of the court below with the same purport is fair, and is not in violation of the law such as the misunderstanding of legal reasoning on Article 36 of the former Patent Act, as argued in the Reasons for Appeal.

3. Wherefore, all appeals shall be dismissed, and the cost of appeal shall be borne by the defeated party, and this decision is delivered with the assent of all Supreme Court Justices.

Source

• Supreme Court Decision 2005Hu3017 Delivered on January 12, 2007, Supreme Court Library of Korea